The EPO has introduced a number of changes to speed up prosecution and opposition proceedings - collectively known as ‘Early Certainty’ initiatives. Here, Gwilym Roberts and Victoria Barker consider the impact of these changes on EPO proceedings.
The speed of EPO proceedings is a concern for many applicants and patentees who seek clarity on their legal position as soon as practical. To address this concern, the EPO has introduced a number of changes to speed up prosecution and opposition proceedings - collectively known as ‘Early Certainty’ initiatives.
In this article, we look at what impact these initiatives have on the day-to-day working of the EPO and what this means for both applicants and patentees. We also consider what steps, if any, parties may wish to take now.
What is it?
‘Early Certainty’ is the title being given to a number of initiatives at the European Patent Office (EPO) to speed up their internal processes, with the ultimate goal of expediting prosecution and opposition proceedings. The idea is that by getting patents granted faster, and opposition proceedings concluded more quickly, parties will have certainty on their legal position earlier than they have in the past, hence the phrase ‘Early Certainty’.
Why is it important?
EPO pre-and post-grant proceedings can be slow, and it has not been uncommon for cases to lie dormant at the EPO for several years. This is frustrating for applicants who want to get their patents granted, as well as for patentees and opponents who may be waiting for the outcome of opposition proceedings to decide on a business strategy. Applicants have also objected to paying high annual renewal fees for dormant applications. For example, the EPO renewal fee for a pending application is currently € 1,575 per year for the tenth and subsequent years. In addition, product life cycles can be very short for certain areas of technology such as mobile phones. Therefore, rapid grant is essential to allow applicants to fully exploit their inventions before the technology becomes superseded in these rapidly evolving fields.
What are the goal timeframes?
The EPO’s goal is that, by 2020, Search Reports will be provided within six months, and examination will be completed in an average of 12 months. At present, the average timescale for examination is 30.5 months.
At opposition level, the EPO now aims to provide a decision on ‘straightforward’ cases in 15 months from the expiry of the opposition period, excluding any subsequent appeal. The current average timescale for such cases is 25.4 months.
Is this new?
Not really. The EPO has been aware of turnaround issues for some time, and there have been a number of different initiatives that have been rolled out with a view to accelerating the EPO’s internal processes. For example, the ‘Early Certainty from Search’ initiative was introduced in July 2014.
The ‘Early Certainty for Examination’ and ‘Early Certainty for Opposition’ initiatives were implemented in July 2016.
What’s the update now?
While these initiatives were announced a while ago, they had little immediate effect on applicants and patentees. However, as time goes on, we’re increasingly seeing the impact of the Early Certainty initiatives in our day-to-day practice.
So, what are we noticing?
We’re seeing a real push by examiners to get cases through prosecution, and some examiners are being more helpful than we might normally expect, for example, by pointing out subject-matter that might be allowable to try and expedite allowance. Other examiners are, however, taking it upon themselves to make what they consider to be minor amendments to try and push cases through to allowance. Sometimes the proposed amendments are acceptable to applicants, but other times they are not and run up costs for applicants who then have to try and get these amendments reversed.
Examiners also seem to be issuing final examination reports more readily, and in particular issuing these earlier in prosecution than we might normally expect. Some applicants have received the same number of final examination reports in the last nine months as they had in the previous nine years! Final examination reports invite applicants to discuss a case in person at the EPO, at ‘Oral Proceedings’.
While this can be a good way of obtaining a claim set both sides are happy with, the costs involved are typically high, largely due to the preparation time required by applicants and their attorneys. Preparing for Oral Proceedings is also time consuming for examiners, and it remains to be seen if the high level of final examination reports being issued at present can be sustained with current staffing levels at the EPO.
The EPO is also encouraging applicants to withdraw their applications at an earlier stage by improving the refund rates. In particular, it is now possible to get a refund of 50% of the examination fee after the receipt of the first examination report (but prior to filing a response). This has had relatively little impact, as few applicants withdraw an application at such an early stage in prosecution.
To help the EPO to reduce the length of ‘straightforward’ opposition proceedings, extensions of time for responding to an opposition are now only allowed if there are ‘exceptional circumstances’. The EPO guidance on what qualifies as a ‘straightforward’ opposition and ‘exceptional circumstances’ is not clear, and it seems that each request for an extension of time will be judged on its individual merits.
We have so far been able to obtain extensions of time for oppositions with more than one opponent. While faster opposition proceedings are welcomed, it is questionable whether this policy is fair for patentees, since it is noted that opponents have nine months to prepare and file an opposition, while patentees now only have four months to respond.
The final stage of the opposition process generally involves both parties attending a hearing at the EPO. To help the parties prepare for this, the EPO issues a document summarising the arguments presented by both sides, providing the EPO’s preliminary conclusions on these arguments. This provides parties with some guidance on how persuasive their arguments have been so far, and which arguments need more work.
We are now seeing an increasing number of cases in which the document only summarises the arguments and provides no guidance as to how these have been received by the EPO. This makes hearings less predictable, and increases costs since parties need to prepare arguments for all aspects of the opposition.
The EPO is now giving parties an average of six months’ notice prior to a hearing, increased from four months. While this does give parties more time to prepare for a hearing once a date has been set, it is noted that hearings are generally sooner than they were before the Early Certainty initiatives, giving the parties less preparation time overall.
Is the quality of the EPO’s work affected by Early Certainty?
The EPO is very proud of its reputation for providing a high quality service that is well regarded by other international patent offices. It would therefore be surprising if the Early Certainty schemes caused any significant reduction in the quality of the EPO’s work products. For more insight on the EPO’s recent operation, read our Chairman Gwilym Roberts’ piece EPO – steps forward, steps back?
What if I want my application granted even faster?
There are other EPO initiatives that can be used alongside the Early Certainty initiatives to further speed up grant of a patent application. Read our updates on the Patent Prosecution Highway (PPH) and accelerated prosecution (PACE) for more information.
It may also be worthwhile contacting examiners informally (e.g. by phone) to discuss an application. This may help to gauge how receptive the examiner would be to, for example, a proposed claim amendment. It is worth noting, however, that examiners cannot give a decision on substantive matters during telephone conversations.
My application is being processed too quickly! What can I do?
There are many reasons why applicants may wish to slow down prosecution of a patent application. For example, applicants may want to delay the prosecution process until the outcome of prosecution in another country is known. Alternatively, applicants may be waiting for agreement on funding or licensing matters.
The EPO only has a mechanism for slowing down prosecution in exceptional circumstances (for example, in the event of parallel court proceedings). However, the time period for responding to Office Actions can be extended to six months as of right, and can be extended by a further 2-3 months upon payment of a small fee (currently €255). Applicants may also wish to consider filing divisional applications to delay prosecution, although this is typically an expensive strategy.
Do I need to do anything now?
Not necessarily, however, if you have a particular timeframe in mind for prosecution of your patent application, do let your attorney know as soon as possible as certain initiatives can only be implemented at specific times (such as accelerated processing using PPH). Similarly, if you are concerned about the impact Early Certainty might have on the cost of proceedings at the EPO, do speak to your attorney about this. We have much experience of developing corporate strategies for our clients, and can work with you to find an approach that suits both your business and your budget.
The slow turnaround of cases at the EPO has been a problem for a while, and any steps the EPO can take to tackle this should be welcomed. It is important, however, that the quality of the EPO’s service does not suffer as a consequence, or that the delays are simply moved to another area of the EPO’s service.
While Early Certainty is a step in the right direction, we’d also like to see greater flexibility to make the EPO more user-friendly, including the option of super acceleration of prosecution where the technology moves fast enough and more options for applicants who wish to slow down proceedings.